Closing a national route to filing a European application is not new.
A dozen EPC contracting states have already closed their national route, namely:
Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Lithuania, Malta, Monaco, the Netherlands and Slovenia.
Any PCT application must go through the EPO in order to obtain protection in these states.
It was announced at the end of November that, effective 1 January 2020, San Marino has closed the national route and thus will no longer accept European patent applications, or act as a receiving office under the PCT. This does not mean that patent protection in this mountainous microstate is not available, rather that all applications must now be filed directly with the EPO.
Whilst this particular change is unlikely to have an impact on most filing strategies (there were only four applications made through the national route in San Marino in 2016), it is worth bearing in mind the potential advantages, and disadvantages, of using a national route when filing in Europe.
By far the most common strategy when seeking protection in any European state is to file an application with the EPO. The advantages of this approach are clear: one thread of prosecution that, if granted, is automatically recognised by 37 member states. On top of this, the prosecution may be conducted entirely in a single language, such as English, with translations only required upon grant.
So why would anyone go to the trouble of filing nationally?
Despite these advantages, filing at the EPO can be a slow and expensive business. For those seeking protection in a limited number of European states (fewer than five, for instance), there may be cost savings to be had in only proceeding with national filings. This could be beneficial to applicants with smaller target markets. Official fees are usually much less expensive before national offices. It is also often the case that filing nationally is substantially faster than filing at the EPO; the UK IPO, for example, will often complete examination within 12 months. The bottom line: it may be cheaper to avoid the EPO when filing in fewer countries.
For most applications, the single substantive examination at the EPO is preferable. However, a rejection at this level rules out the prospect of patent protection in any EPO state. If prosecuting a potentially difficult or controversial application the prospect of parallel examinations – and the possibility of multiple outcomes – might be more appealing. Going down this decentralised route can also make the application more frustrating for third parties to challenge after grant. National route applications may also have less burdensome examination proceedings, and can take more or less favourable views on patentability of certain subject matter.
Another reason to avoid the EPO route is to distant your patents from a lengthy post grant challenge via the central EPO opposition procedure. While the EPO is implementing processes to reduce the time period that it takes to complete an opposition, this is currently around 4.5 years (including an Appeal), often making it difficult or impossible to enforce a patent nationally during that time (a good strategy for opponents!).
Avoiding the EPO entirely is unlikely to be a common strategy (though there may be unusual circumstances which warrant it). A far more common approach is to use a national filing on an ad hoc basis for special case filings and as an application’s priority filing before later applying to the EPO. Under this strategy, one might seek the quicker processes of a member state such as France, the UK or Germany to rapidly show competitors the strength of their hand, or encourage would-be investors.
As we enter another politically charged week here in the UK, it is worth noting that Brexit will have no effect on patent filing strategy. The European Patent Office (EPO) is entirely separate to the EU, and the UK will continue to work with the EPO beyond any form of Brexit.